1.6 Can a complainant show rights in a personal name?
Consensus view: While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name. Reference can be made to the test required for the common law action of passing off. Personal names that have been trademarked are protected under the UDRP.
Relevant decisions:
Julia Fiona Roberts v. Russell Boyd D2000-0210, Transfer
Jeanette Winterson v. Mark Hogarth D2000-0235 among others, Transfer
Dr. Michael Crichton v. In Stealth Mode D2002-0874, Transfer
However: The name in question should be actually used in trade or commerce to establish unregistered trademark rights. Merely having a famous name (such as a businessman, or religious leader) is not necessarily sufficient to show unregistered trademark rights.
Relevant decisions:
Israel Harold Asper v. Communication X Inc. D2001-0540 among others, Denied
Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa D2003-0248, Transfer
1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “ secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
Relevant decisions:
Uitgeverij Crux v. W. Frederic Isler D2000-0575, Transfer
Skattedirektoratet v. Eivind Nag D2000-1314,Transfer
Amsec Enterprises, L.C. v. Sharon McCall D2001-0083, Denied
Australian Trade Commission v. Matthew Reader D2002-0786, Transfer
Imperial College v. Christophe Dessimoz D2004-0322 among others, Transfer